DETAILED ACTION
AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA . In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Election/Restrictions
Applicant’s election without traverse of Group I (claims 1 and 4-10) and the species of vitamin in the reply filed on 24 August 2026 is acknowledged. Claims 11-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1 and 4-10 are rejected under 35 U.S.C. 103 as being unpatentable over Jahana et al. (US Patent Application Publication 2023/0056021).
Jahana et al. discloses methods for generating ultrafine bubbles (abstract). The ultrafine bubbles can be prepared in water (examples & claim 6). The ultrafine bubbles may then be incorporated into numerous applications (paragraph [88]). One such application is food and drink, where the additional ingredients suggested include vitamins (paragraph [92]).
Jahana et al. thus discloses compositions comprising the individual elements instantly claimed (water and vitamins present with the ultrafine bubbles) and together these would provide a composition as instantly claimed. However, Jahana et al. is not anticipatory insofar as these combinations must be selected from various lists/locations in the reference. It would have been prima facie obvious, however, to make the combination since each component is taught as being useful in making the compositions of the prior art. Since this modification of the prior art represents nothing more than the predictable use of prior art elements according to their established functions a prima facie case of obviousness exists. See MPEP 2141.
Instant claim 1 and dependent claims 4 and 10 recite features of the composition (such as it increasing cell permeability of the vitamin). While Jahana et al. does not teach this feature, it is reasonable to conclude that aqueous ultrafine bubbles would provide for this property in view of the teaching of the instant specification (paragraph [62]).
Instant claim 5 further limits the size of the bubbles. Jahana et al. discloses a size which does not read upon the instantly recited range but does overlap (paragraph [22] & claim 9). And in cases involving overlapping ranges, where the instantly claimed ranges “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists. See MPEP 2144.05.
Instant claim 6 further limits the concentration of the vitamins. While this concentration is not suggested by Jahana et al., generally differences in concentration and tempera-ture will not support the patentability of subject mat-ter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to dis-cover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). See MPEP 2144.05(II)(A).
Instant claim 7 further limits the time the bubbles are stable, and Jahana et al. teaches such a feature (paragraph [50]).
Instant claim 8 recites a limitation to the manner in which the bubbles are prepared. Jahana et al. does not teach the specific manner instantly recited in which the bubbles are prepared. However, the patent-ability of a product does not depend on its method of production, and if the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. See MPEP 2113.
Instant claim 9 recites a limitation to the use (oral suitability), and the food and drink application taught by Jahana et al. addresses this limitation.
Conclusion
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/Brian Gulledge/Primary Examiner, Art Unit 1699
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